USPTO Research, tab by tab

Hi! This is Howard Katzenberg, GleanMark's founder. Today, I want to walk you through GleanMark's USPTO Research page, one tab at a time, using a real office action refusal.

Here's the case: the mark is CONQUER FITNESS, for personal training services. The examiner refused it under Section 2(d) and cited one registration: CONQUER, owned by Les Mills International, for publishing fitness programs and training materials. The examiner also said FITNESS is descriptive and must be disclaimed. So where do you start? A great place is to find similar cases from the same examiner that ultimately registered. The research starts right here: clicking on the examiner's name opens GleanMark's USPTO Research page.

The first tab, Search OAs, opens on Ellen Perkins's own cases: the seven with the same two issues as ours, where the mark registered anyway and GleanMark has read the applicant's response. Each one shows how the applicant answered, and you can open the response they filed.

Next, Cited Marks. I type in the registration the examiner cited, and GleanMark shows the applications the USPTO refused over it: four, including ours, and the other three registered anyway. With this information, you can read how they got past it: GleanMark has the filed response for two of the three. All three come from one publisher of exam-prep guides, whose books have nothing to do with fitness, so their path won't work for a personal trainer.

Crowded Field counts the live registrations that already use the same word. I type CONQUER, anywhere in the mark, in class 41: there are 62 live registrations, from 53 different owners. That's evidence that CONQUER alone is a weak mark.

Thor Tech Pairs goes a step further. I type in our serial number, and it finds the mark and the registration the examiner cited. Then it searches the register for marks registered twice, to unrelated owners: once for services like ours, and once for goods like the cited mark's.

It found more than 100 pairs. LIVE HAPPY is registered to an athletic club for exercise instruction, and to a different company for well-being magazines. HYPHEN is registered to one owner for personal training, and to another for online magazines. The Office already lets the same mark sit on both sides of this line. Tag the strongest, and GleanMark builds an exhibit bundle, with a USPTO status copy for each.

For the disclaimer, the Disclaimers tab takes the same serial number. It reads the examiner's requirement, FITNESS in class 41, and counts how the USPTO has treated that word.

92% of the live registrations that contain it disclaim it. So this is usually a requirement to accept, not argue.

The research page has more tabs for other needs, and each has its own short video: Fame, for the Board's rulings on whether a mark is famous; the ID Manual, for pre-approved goods wording when you file a new application; and TTAB, for Board cases by how they ended.

To research your own office actions, start a free trial or book a short walkthrough at gleanmark.com.